Bridgestone Corporation et al.

Patent Trials and Appeals Board

May 24, 2021

2020003371 (P.T.A.B. May. 24, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/540,875 06/29/2017 William L. Hergenrother P12063US2A 9313
48985 7590 05/24/2021
BRIDGESTONE AMERICAS, INC.
10 EAST FIRESTONE BLVD.
AKRON, OH 44317
EXAMINER
ZIMMER, MARC S
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
05/24/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
iplawpat@bfusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM L. HERGENROTHER, WILLIAM J. CORSAUT, and
HIROSHI MOURI
Appeal 2020-003371
Application 15/540,875
Technology Center 1700
Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and
N. WHITNEY WILSON, Administrative Patent Judges.

PER CURIAM.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the
Examiner’s decision to reject claims 1–4, 6–14, and 16–20.1, 2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The
Appellant identifies the real party in interest as Bridgestone Corporation and
Bridgestone Americas Tire Operations LLC (Appeal Br. 2).
2 Claim 15 was listed in the final grounds of rejection, however, as claim 15
was previously canceled we consider the Appeal in relation to claims 1–4,
6–14, and 16–20.
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Application 15/540,875

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CLAIMED SUBJECT MATTER
The claims are directed to an amino alkoxy-modified silsesquioxane
adhesive for adhering steel alloy to rubber. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A coated wire comprising:
a steel alloy wire coated with a coating comprising one or
more amino alkoxy-modified silsesquioxane compounds
selected from the group consisting of an amino alkoxy-
modified silsesquioxane, an amino/mercaptan co-alkoxy-
modified silsesquioxane, an amino/blocked mercaptan co-
alkoxy-modified silsesquioxane, or a salt of one or more
thereof; and having the formula:

wherein w, x, y and z represent mole fractions, z does not
equal zero, at least one of w, x or y must also be present, and
w + x + y + z = 1.00;
wherein at least one of R1, R2, R3 and R4 must be present
and be selected from the group consisting of R6Z, wherein Z is
selected from the group consisting of NH2, HNR7 and NR72; and
one or more remaining R1, R2, R3 and R4, if present, are the
same or different and selected from the group consisting of
(i) H or an alkyl groups [sic] having one to about 20 carbon
atoms, (ii) cycloalkyl groups having 3 to about 20 carbon
atoms, (iii) alkylaryl groups having 7 to about 20 carbon atoms,
(iv) R6X, wherein X is selected from the group consisting of Cl,
Br, SH, SaR72, NR72, OR7, CO2H, SCOR7, CO2R7, OH, olefins,
epoxides, amino groups, vinyl groups, acrylates and
methacrylates, wherein a = 1 to about 8, and (v) R6YR8X,
wherein Y is selected from the group consisting of O, S, NH
and NR7; wherein R6 and R8 are selected from the group
consisting of alkylene groups having one to about 20 carbon
atoms, cycloalkylene groups having 3 to about 20 carbon
atoms, and a single bond; and R5 and R7 are selected from the
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Application 15/540,875

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group consisting of alkyl groups having one to about 20 carbon
atoms, cycloalkyl groups having 3 to about 20 carbon atoms,
and alkylaryl group having 7 to about 20 carbon atoms;
wherein a surface of the steel alloy is directly coated with
the coating;
wherein the steel alloy is an alloy comprising iron and
about 1% to about 50% of at least one alloy metal.
REFERENCES
The applied references are:
Name Reference Date
Hergenrother ‘913 US 2009/0165913 A1 July 2, 2009
Okamoto US 2010/0200143 A1 Aug. 12, 2010
Toyosawa US 2013/0192960 A1 Aug. 1, 2013
Hergenrother ‘691 US 8,642,691 B2 Feb. 4, 2014
Hergenrother ‘282 US 8,794,282 B2 Aug. 5, 2014
Jones WO 2013/112672 A1 Aug. 1, 2013
Bailey Tech Matters – Chemical
Composition of Steel, Bailey
Metal Processing Limited –
Products
Sept. 28, 2017

MatMatch Carbon Steel: Properties,
Production, Examples and
Applications, Ceratizit Group
2021
Dictionary.com https://www.dictionary.com/ 2021

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Application 15/540,875

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REJECTIONS
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1–4, 6–9, 19, 20 103 Hergenrother '913,
Okamoto, Toyosawa,
MatMatch
10–14, 16–18 103 Hergenrother '913,
Okamoto, Toyosawa,
Jones, MatMatch
1–4, 8, 9, 19, 20 Obviousness-type
double patenting
Hergenrother '282,
Okamoto, Toyosawa,
Bailey
19, 20 Obviousness-type
double patenting
Hergenrother '691,
Okamoto, Toyosawa,
Bailey, Dictionary.com
OPINION
Rejections under 35 U.S.C. § 103
The Appellant argues the claims in the following groups: 1) claims 1
and 19 and the claims depending therefrom; 2) claims 10–14 and 16–18; and
3) claim 16 (Appeal Br. 6–11; Reply Br. 2–7). We therefore limit our
discussion to claims 1, 10, and 16. See 37 C.F.R. § 41.37(c)(1)(iv) (2019).
Claims 1 and 10
Claim 1 requires a steel alloy wire comprising iron and about 1–50%
of at least one alloy metal,3 wherein the steel alloy wire is directly coated
with a composition comprising one or more amino alkoxy-modified
silsesquioxane (AMS) compounds.
Claim 10 requires a process of directly coating a steel alloy wire
comprising iron and about 1–50% of at least one alloy metal, wherein the
coating comprises one or more AMS compounds.

3 An “alloy metal” is a metal in addition to iron (Spec. ¶ 41).
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Hergenrother ‘913 discloses an adhesive comprising AMS for coating
unplated metal wire (¶ 9), wherein the metal is any conventional steel (¶ 36).
The exemplified steels are low-, medium-, and high-carbon grade steel (id.).4
MatMatch evidences that carbon steel is an iron alloy (p. 1), wherein
medium-carbon steel has a manganese content of 0.60–1.65 wt. % (p. 2).
Regarding claims 1 and 10, the Appellant argues that as carbon is not
a metal and as the secondary references include plated metal or wire cords,
the prior art does not teach or provide sufficient reasoning for directly
coating an alloy metal comprising iron and about 1–50% of at least one alloy
metal as claimed (Appeal Br. 6–11; Reply Br. 2–6).
The issue is whether the prior art would have led one of ordinary skill
in the art to directly coat a steel alloy wire comprising iron and about 1–50%
of another metal as claimed.
Based on the disclosure of Hergenrother ‘913 to coat an unplated
metal wire (¶ 9), wherein the metal is medium-carbon steel (¶ 36), having
the composition of medium-carbon steel as would be understood by one of
ordinary skill in the art,5 one of ordinary skill in the art would have been led
to coating the AMS adhesive composition of Hergenrother ‘913, directly
onto a steel alloy composition as claimed, specifically one comprising iron
and about 1% up to 1.65% wt. other metal (manganese). A reference
encompasses not only what it expressly discloses, but also what it would

4 A discussion of the secondary references Okamoto, Toyosawa, and Jones
is not necessary to our decision.
5 MatMatch evidences that medium-carbon steel is an alloy comprising iron
and a manganese content of 0.60–1.65 wt. % (pp. 1–2).

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have fairly suggested to one of ordinary skill in the art. See In re Lamberti,
545 F.2d 747, 750 (CCPA 1976).
Coating Hergenrother ‘913’s wire adhesive AMS composition onto
Hergenrother ‘913’s disclosed wires would have been a clear and obvious
suggestion of the prior art. The fact that multiple steel wires are disclosed
would not have made any of them less obvious, particularly where, as here,
the wire and adhesive recited in the Appellant’s claim is used for the
identical purpose taught by Hergenrother ‘913. See Merck & Co. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Lemin, 332 F.2d 839,
841 (CCPA 1964).
For the above reasons, we sustain the Examiner’s prior art rejection of
claims 1 and 10.
Claim 16
Claim 16 requires the process of claim 10, further comprising soaking
the steel alloy wire in a solvent to remove oil from the wire prior to coating.
The Examiner finds (Ans. 3–5):
[It was] widely known to treat wires comprised of steel with oil at the
point of manufacture to prevent oxidation of the wire given the ease in
which steel oxidizes even under ambient conditions. However, the oil
may impart undesirable properties to a rubber into which the wire
embedded and, anyway, it would be obvious that the wire should be
cleaned of the protective oil prior to coating it with the
silsesquioxane.

The Appellant argues: “The Examiner argues that the wire having oil
and removing the oil would be obvious, but even if this were true, the
particular removal step of “soaking the steel alloy wire in a solvent for the
oil prior to the wetting step,” was not even addressed. Thus, there is no
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prima facie case of obviousness for these claims (Appeal Br. 11; Reply
Br. 6–7).
The Examiner’s finding is directed toward claim 16’s limitations and,
therefore, implicitly includes the recited soaking step. The Appellant does
not argue that the Examiner’s finding is wrong. For that reason and because
the Examiner’s finding is reasonable, we accept it as fact. See In re
Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964). Accordingly, we affirm the
rejection of claim 16.
Obvious-type Double Patenting Rejections
Obviousness-type Double Patenting Rejections
over the primary patent Hergenrother ‘282
The Appellant argues the claims as a group (Appeal Br. 11; Reply
Br. 7). We therefore limit our discussion to one claim, i.e., claim 1. See 37
C.F.R. § 41.37(c)(1)(iv) (2019).
Claim 1 requires steel alloy wire comprising iron and about 1–50% of
at one least alloy metal, wherein the steel alloy wire is directly coated with a
composition comprising one or more AMS compounds.
Hergenrother ‘282 claims unplated steel cord coated with an adhesive
comprising AMS (claims 15, 20).
Bailey evidences that steel is an alloy of iron and other
elements (p. 1), wherein the typical manganese content is 0.20–2.00%, and
typical maximum levels of copper, nickel, chromium, and molybdenum are
0.20%, 0.20%, 0.15% and 0.06% respectively (p. 2).
The Appellant states that the same arguments for the prior art
rejection of claims 1 and 19 over the primary reference Hergenrother ‘913
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are applicable to the non-statutory double patenting rejection (Appeal Br. 11;
Reply Br. 7).
Based on Hergenrother ‘282’s claims to unplated steel coated with an
adhesive comprising AMS, having the composition of steel as would have
been understood by one of ordinary skill in the art,6 the claims of
Hergenrother ‘282 would have suggested AMS adhesive directly coated onto
a steel alloy wire as claimed, including one comprising iron and alloy metals
of 0.20-2.00% manganese, up to 0.20% copper, up to 0.20% nickel, up to
0.15% chromium, and up to 0.06% molybdenum. The fact that multiple steel
wire elements are recited would not have made any of them less obvious,
particularly where, as here, the wire and adhesive recited in the Appellants’
claim are used for the same purpose as in Hergenrother ‘282’s claims 15
and 20. See Merck, 874 F.2d at 807; Lemin, 332 F.2d at 841.
For the above reasons, we sustain the Examiner’s nonstatutory obviousness-
type double patenting rejection of claims 1–4, 8, 9, 19, and 20.
Obviousness-type Double Patenting Rejections
over the primary patent Hergenrother ‘691
The Appellant argues independent claim 19 and its dependent
claim 20 as a group (Appeal Br. 11–12; Reply Br. 7). We therefore limit our
discussion to claim 19. See 37 C.F.R. § 41.37(c)(1)(iv) (2019).
Claim 19 requires steel alloy embedded in vulcanized rubber, wherein
the steel alloy comprises iron and about 1–50% of at least one alloy metal,

6 Bailey evidences that steel is an alloy comprising iron, and typically 0.20–
2.00% manganese, up to 0.20% copper, up to 0.20% nickel, up to 0.15%
chromium, and up to 0.06% molybdenum (pp. 1–2).

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and is directly coated with an adhesive composition comprising one or more
AMS compounds.
Hergenrother ‘691 claims uncoated steel embedded in vulcanized
rubber comprising AMS, wherein there is improved adhesion of the rubber
to the steel compared to rubber without AMS (claim 9).
Bailey evidences that steel is an alloy of iron and other elements
(p. 1), wherein the typical manganese content is 0.20–2.00%, and typical
maximum levels of copper, nickel, chromium, and molybdenum are 0.20%,
0.20%, 0.15% and 0.06% respectively (p. 2).
The Appellant argues that no reason was provided for the rejection,
and even if reasons had been provided, there would be no prima facie case of
obviousness for the same reasons given regarding the double patenting
rejection over Hergenrother ‘282 (Appeal Br. 11–12; Reply Br. 7).7
As Hergenrother ‘691 claims improved adhesion,8 of uncoated steel
embedded,9 in a vulcanized rubber comprising AMS, compared to rubber
without AMS, one of ordinary skill in the art would have understood that
Hergenrother ‘691’s recited AMS composition forms an adhesive coat
directly on some portion of the uncoated steel, thus encompassing an
AMS-containing adhesive coated onto the steel embedded in the vulcanized
rubber as claimed.

7 The Examiner refers to page 8 of the Non-Final rejection for the double
patenting rejection (Ans. 12).
8 Dictionary.com defines “adhesion” as to adhere (p. 1), wherein adhere is to
stay attached; stick fast; cleave; cling; to hold closely or firmly (p. 8).
9 Dictionary.com defines “embed” as to surround tightly or firmly; envelop
or enclose (p. 14).
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As steel would have been understood by one of ordinary skill in the
art to comprise iron and alloy metals of 0.20–2.00% manganese, up to
0.20% copper, up to 0.20% nickel, up to 0.15% chromium, and up to 0.06%
molybdenum, the claims of Hergenrother ‘691 would have suggested the
steel alloy required by Appellant’s claim 19. The fact that multiple steel wire
elements are recited would not have made any of them less obvious,
particularly where, as here, the wire and adhesive recited in the Appellant’s
claim is used for the identical purpose as in Hergenrother ‘691’s claim 9. See
Merck, 874 F.2d at 807; Lemin, 332 F.2d at 841.
Thus, we affirm the Examiner’s nonstatutory obviousness-type double
patenting rejection of claims 19 and 20.
CONCLUSION
The Examiner’s decision to reject claims 1–4, 6–14, and 16–20 is
affirmed.
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6–9,
19, 20
103 Hergenrother ’913,
Okamoto,
Toyosawa,
MatMatch
1–4, 6–9,
19, 20

10–14, 16–
18
103 Hergenrother ’913,
Okamoto,
Toyosawa, Jones,
MatMatch
10–14, 16–
18

1–4, 8, 9,
19, 20
Obviousness-type
double patenting,
Hergenrother ’282,
Okamoto,
Toyosawa, Bailey
1–4, 8, 9,
19, 20

19, 20 Obviousness-type
double patenting,
Hergenrother ’691,
Okamoto,
Toyosawa, Bailey,
Dictionary.com
19, 20
Overall
Outcome
1–4, 6–14,
16–20

TIME FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED